AIPPI 2018 - Study Question - Partial Designs

AIPPI 2018 - Study Question - Partial designs

Study Question

Submission date: May 1, 2018

Sarah MATHESON, Reporter General

Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General

Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General

Partial designs

Responsible Reporter(s): Yusuke INUI and Ari LAAKKONEN

National/Regional Group / Czech Republic
Contributors name(s) / Michal Havlik
e-Mail contact /

I. Current law and practice

Please answer all questions in Part I on the basis of your Group's current law and practice.

1. Is protection given to Partial Designs, and if so, are the laws for the protection of Partial Designs different to the laws for the protection of designs generally? If YES, please explain.

Yes

Please Explain

Partial Designs are protected under the same conditions as designs generally.

2. How are Partial Designs specified, described and/or graphically depicted?

In cases when the design contains parts of the product for which no protection is sought, a visual disclaimer may be used. The visual disclaimer may only be used when it is impossible to separate the part for which the protection is sought from the rest of the product. .

The disclaimer is only acceptable by the Czech Industrial Property Office provided that the following conditions are met:

the disclaimer clearly indicates that protection is not sought for certain features of the design used in the representation;

the disclaimer is shown consistently in all the views where it appears.

In addition, the disclaimer must be clear and obvious. The substance of the design, i.e. its identifying features, must be unambiguously comprehensible from the depiction of the design. In addition, there must be a clear distinction between the claimed and disclaimed features.

2.a. Is there a visual indication, e.g. by dotted or dashed lines, or shading or colouring, of those components that are not included in the Partial Design, i.e. of the Unclaimed Part?

Yes

Please Explain

When the design is depicted by means of line drawings, it is recommended to use as the visual disclaimer the broken lines. Broken lines consist of a trace made up of dots or dashes (or a combination of both). Broken lines should be combined with continuous lines which are used for parts for which protection is sought. In cases where broken lines represent the feature of the design and part of the design needs to be disclaimed, this can be done by using other types of disclaimers (i.e. boundaries, colour shading and blurring).

Although broken lines are the preferred type of the disclaimer, there are alternatives if it cannot be used. Firstly, boundaries could be an option. In order to be accepted, the features for which protection is sought, should be clearly indicated within the boundaries.

Secondly, colour shading could be an option. This type of visual disclaimer uses contrasting tones of colour to obscure the features for which protection is not sought. The features for which protection is sought must be clearly shown so that they are clearly perceptible, whereas the disclaimed features must be represented in a different tone of colour and in a way that they appear blurred or imperceptible.

Lastly, blurring could be an option. This type of visual disclaimer obscures the features for which protection is not sought. The features for which protection is sought must be clearly distinguishable from the disclaimed (blurred) features.

2.b. Is there a written description of the Product, of which the Partial Design forms part?

Yes

Please Explain

Written description of the Product is a non-mandatory part of the Design and it has no impact on scope of protection of the Design. Consequently, it is not possible to make a written disclaimer as part of the written description.

2.c. Can verbal disclaimers be used?*

*Verbal disclaimers may be used in Brazil. For example, in the case of a handle for a pan, the entire pan is shown but the applicant may indicate in writing that protection is sought only for the handle.

Please Explain

3. Can a Partial Design forming part of a Product X be infringed by the use of the same Partial Design on a Product Y? If so, please explain any required link or nexus between X and Y.

Yes

Please Explain

Under express provision in the Czech Design Act, the title of the Design and determination of the product to which the Design is applied shall not have effect on scope of protection.

4. Can a Partial Design forming part of a Product X be considered not novel in view of the same Partial Design in prior Product Y? If so, please explain any required link or nexus between X and Y.

Yes

Please Explain

A partial design constitutes prior art irrespective of the type of product to which it is applied.

5. Please explain if your Groupâ€™s laws take into account elements outside the scope of the Partial Design (i.e. the Unclaimed Part) when considering the application of Design Constraints, such as must fit / must match exceptions.

Under express provision of the Czech Design Act, when asessing registrabiilty of a design, the Office does not take into consideration features which must be necessarily reproduced in their exact form and dimensions so as to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to, or placed in, around another product so that either product may perform its function.

II. Policy considerations and proposals for improvements of your Group's current law

6. Are there aspects of your Group's current law or practice relating to Partial Designs that could be improved? If YES, please explain.

Please Explain

7. Is the way of specifying, describing or depicting Partial Designs satisfactory?

Yes

Please Explain

8. Should the Unclaimed Part influence the protection of the parts of the design that are claimed? Please explain why or why not.

Please Explain

The applicant intentionally disclaims the Unclaimed Part from scope of protection of the design and hence the Unclaimed Part should generally have an effect on its scope of protection other than assessing its overall impression.

9. Should Design Constraints restrict the subsistence and scope of protection of Partial Designs? Please explain why or why not.

Yes

Please Explain

Yes, both when assesing registrability and scope of protection of design, the freedom of designer when desigining the relevant product should be taken into consideration in order to provide fair and balanced conditions of registrability and scope of protection in case of alleged infringement.

10. Should the assessment of whether a design is for a portion of a whole Product, i.e. that design is a Partial Design, take into account:

10.a. the design as shown and any Unclaimed Part; and/or

Yes

Please Explain

10.b. whether the Product is normally sold separately?

Please Explain

The fact that a product is sold separately should not be relevant for asessment whether it is a whole Product as spare parts are often sold separately without being functional whole products.

11. Are there any other policy considerations and/or proposals for improvement to your Group's current law falling within the scope of this Study Question?

Please Explain

III. Proposals for harmonisation

Please consult with relevant in-house / industry members of your Group in responding to Part III.

12. Should a Partial Design be registrable as an independent design?

Yes

Please Explain

Partial designs are helpful in defining the scope of protection better and more clearly and thus are to the benefit of both IP owners and public at large.

13. Is harmonisation of the law of Partial Designs desirable?

Yes

Please Explain

If YES, please respond to the following questions without regard to your Group's current law or practice.

Even if NO, please address the following questions to the extent your Group considers your Group's current law or practice could be improved.

14. Please propose a suitable framework for specifying, describing and/or graphically depicting (a) the Partial Design and (b) the Unclaimed Part.

Czech National Group considers graphical depiction of the Partial Design and Unclaimed Part by broken lines to be optimal.

15. Taking the example of a Partial Design for a handle for a pan, and an accused product consisting of a sieve with the same handle, the:

· Unclaimed Part (UP) of the Partial Design is the pan without the handle;

· Surrounding Context (SC) is the part of the accused product without the protected Partial Design, i.e. the sieve without the handle,

Please explain whether differences between the SC and UP should be relevant when considering the overall impressions of the accused product and the Partial Design, in the following circumstances. In each case, please briefly explain why.

15.a. SC is the same as UP

No, unclaimed part and surrounding context should have no effect on scope of protection. Nevertheless, it will have an impact on assessment of overall impression created by the Partial Design and Accused Product.

15.b. SC is not the same as UP, but SC and UP relate to products that are used in the same way

No, unclaimed part and surrounding context should generally have no effect on scope of protection. Nevertheless, they will inevitably have an impact on assessment of overall impression created by the Partial Design and Accused Product.

15.c. SC is not the same as UP, but SC and UP relate to products that look the same

15.d. SC is not the same as UP, but SC and UP relate to products that categorised in the same way when registering designs

15.e. SC is not the same as UP, and SC and UP are entirely unconnected.

16. In light of your answers to Question 15, please propose appropriate rules specifying whether and how the Unclaimed Part should be taken into account when analysing the overall impression of a Partial Design for both individual character and infringement.

The Unclaimed Part should be taken into account when analysing the overall impression of a Partial Design. All relevant factors are to be considered including prior art and freedom of designer when assesing both individual character and infringement. As both Unclaimed Part and Surrounding Context will be visible during the assessment of the designs by the examiner or judge, it will play a role in assessment of hte overall impression.

17. Please propose appropriate rules specifying whether and how Design Constraints arising from the Unclaimed Part should affect a Partial Design. In particular, please explain whether and how must fit / must match Design Constraints affect Partial Designs.

Design Constraints including must fit/must match features arising from the Unclaimed Part should not not be taken into consideration when assessing individual character of a Partial Design.

18. Please comment on any additional issues concerning any aspect of Partial Designs you consider relevant to this Study Question.

No further comments

19. Please indicate which industry sector views are included in your Group's answers to Part III.

No specific industry views were put forward in the report and the answers are neutral.